The aged domain GPI.com was used for decades as an acronym representing General Parts, Inc. A lapse in displaying an obvious landing page, however, led the Great Plains Ventures, Inc. to file a UDRP complaint.
The Respondent proved that they used the domain along with a registered trademark for many years, utilizing the subdomain openwebs.gpi.com for clients. The forum panelist agreed:
Besides, the Disputed Domain Name is being used in good faith. Indeed, Panel finds that, while Respondent is not using , Respondent uses and has long used the Domain Name in good faith via subdomains and in other manners. More, the Disputed Domain Name is a three-letter acronym that is commonly used as a trademark. There are many third parties globally who own trademark registrations for GPI in connection with a variety of goods and services.
In their decision, the sole panelist noted that the domain name GPI.com should remain with the Respondent, adding that a finding of Reverse Domain Name Hijacking is not applicable, as the use of subdomains was not obvious to the Complainant.
The domain transfer was denied.
Copyright © 2024 DomainGang.com · All Rights Reserved.Great Plains Ventures, Inc. v. CARQUEST
Claim Number: FA2312002076391
PARTIES
Complainant is Great Plains Ventures, Inc. (“Complainant”), represented by Kelly Mulcahy of KRONENBERGER RESENFELD, LLP, California, USA. Respondent is CARQUEST (“Respondent”), represented by Jennifer Fairbairn Deal of Brient IP Law, LLC, Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is , registered with Network Solutions, LLC.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Nathalie Dreyfus as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on December 22, 2023; Forum received payment on December 22, 2023.
On December 28, 2023, Network Solutions, LLC confirmed by e-mail to Forum that the domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 2, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2024 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@gpi.com. Also on January 2, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on January 26, 2024.
On January 26, 2024, pursuant to each Party’s request to have the dispute decided by a single-member Panel, Forum appointed Nathalie Dreyfus as Panelist.
On February 2, 2024, Complainant submitted additional written statement to his complaint.
An additional written Response was received on February 5, 2024.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant’s contentions can be resumed as follows:
The Complainant asserts that the Disputed Domain Name is confusingly similar to the Complainant’s trademarks GPI that well predate the registration date of the Disputed Domain Name, which was registered 12 years after. Indeed, the Disputed Domain Name fully incorporates Complainant’s GPI mark, with the mere addition of the non-distinctive top-level domain “.com”.
The Complainant asserts that the Respondent has no right or legitimate interests in respect of the domain name. In fact, the Complainant has continually used the GPI trademark since 1972 and obtained multiple trademark registrations for the GPI marks, beginning 1977. Given the long and continuous use of the GPI trademark and Respondent’s lack of any legitimate use of the Disputed Domain Name, Respondent cannot establish that it has any rights or legitimate interests in the GPI trademark. There is no evidence that Respondent is commonly known by the name GPI or any similar name. Respondent is an automotive aftermarket parts provider that does not market or sell any products or services under the name GPI or any similar name. Respondent has never made any legitimate use of the Disputed Domain Name. More, Respondent’s WHOIS information for the Disputed Domain Name does not refer to the GPI trademark or any substantially similar permutation thereof, and Complainant has never licensed or authorized Respondent to use the GPI trademark. Finally, the Respondent’s failure to use the Disputed Domain Name in any way, is further evidence of Respondent’s lack of rights and legitimate interests in the Disputed Domain Name.
The Complainant alleges the Respondent’s Domain Name has been registered in bad faith. Respondent’s failure to use the Disputed Domain Name in any way is evidence that Respondent registered the Disputed Domain Name in bad faith. The Respondent has owned the Disputed Domain for over thirteen years and has never attempted to develop or use the Disputed Domain Name. Non-use of domain names that contain an established trademark is further evidence of bad faith registration.
B. Respondent
The Respondent’s contentions can be resumed as follows:
Respondent concedes that the Domain Name consists of the letters “GPI” plus the “.com” gTLD. However, Respondent alleges that he has long been connected with GPI as an acronym for or a trademark of General Parts, Inc., and has made good faith and legitimate use of the Domain Name for decades in various ways.
Respondent contends that he has rights and legitimate interests in respect of the domain name. Respondent uses (and before the acquisition, General Parts, Inc. used) the subdomain openwebs.gpi.com to administer an e-commerce website for its B2B customers. Respondent has also used the Domain Name through various subdomains, for other external and internal uses. More, GPI is an acronym for General Parts, Inc., as well as General Parts International, Inc. When the Domain Name was registered, General Parts, Inc. had long used GPI as a name and a trademark.
Respondent also owned and maintained U.S. Reg. No. 994166 for the mark GPI & Design for over four decades since 1974, stating a first use in commerce dated from March 16, 1972, and was valid until 2016. As such, General Parts, Inc. began using GPI in the United States before Complainant’s apparent first use.
Therefore, nothing indicates that Respondent registered or used the Domain Name with Complainant in mind or to take unfair advantage of the reputation attached to its purported trademark. Indeed, until 2016, each time Respondent renewed the Domain Name, it owned a trademark registration for GPI. After the cancellation of the trademark registration, Respondent simply continued to use a long-held legacy domain name made up of an acronym directly tied to Respondent and its affiliates. The uses of the Domain Name have been either internal or, like the e-commerce site, only accessible by customers of Respondent.
Respondent contends the Domain Name was not registered and is not being used in bad faith. Indeed, while Respondent is not using gpi.com, Respondent uses and has long used the Domain Name in good faith via subdomains and in other manners, including for email addresses of General Parts employees. More, the Domain Name is a three-letter acronym or combination that is commonly used including commonly used as a trademark. There are many third parties globally who own trademark registrations for GPI in connection with a variety of goods and services. Therefore, Complainant also has not put forth sufficient or specific evidence of distinctiveness at the time the Domain Name was originally registered or when it was transferred to Advance via the 2014 acquisition. Respondent has provided evidence of good faith use and the current WHOIS records show Respondent openly registered the Domain Name and included accurate contact information in that registration. Finally, there is evidence of plausible good faith use to which the domain can be put, including Respondent’s actual and longtime good faith use.
Complainant put forth no evidence that the Domain Name was acquired primarily to sell, rent, or otherwise transfer the Domain Name to Complainant or a competitor or that Respondent ever attempted to sell the Domain Name to Complainant or a competitor. Complainant put forth no evidence that Respondent registered the Domain Name to prevent Complainant from using GPI in a corresponding domain name. Complainant put forth no evidence that Respondent registered the Domain Name primarily to disrupt the business of a competitor. Complainant put forth no evidence that Respondent registered the Domain Name to attract customers by creating a likelihood of confusion with Complainant’s trademark. Customers cannot be confused by a domain name they cannot access.
Finally, Respondent alleges Complainant engaged in reverse domain name hijacking. Indeed, Complainant was aware of the Domain Name’s affiliation with Carquest and Advance but did not adequately research the connection between these entities and the GPI acronym, despite ample publicly available information. More, after the complaint was filed, Respondent provided evidence of their legitimate interest in the Domain Name and non-malicious intent, which the Complainant ignored by not withdrawing the complaint. Non-use or passive holding of a domain name alone does not constitute bad faith. Therefore, Complainant did not adequately support their allegations of bad faith against the Respondent, particularly by ignoring evidence of legitimate use and the Respondent’s connection to the GPI acronym.
C. Complainant’s Additional Submission
Complainant asserts that the Respondent’s bad faith in registering the Domain Name should be determined as of 2010 because the transfer of a domain name to a third-party amounts to a new registration and that successive renewals of a domain name constitute re-registrations. Therefore, Respondent had actual and constructive notice of Complainant’s prior rights in the GPI mark at the time it registered the Domain Name.
Moreover, Respondent stopped using the GPI mark in commerce by the time it re-registered the Domain Name after 2016. 2011 was the last year that evidence of use in commerce of the GPI mark was recorded with the USPTO and this evidence was submitted by General Parts, Inc. Consequently, the last specimen of use submitted in connection with the GPI registration was filed on March 10, 2011, by General Parts, Inc. and is dated stamped June 26, 1973.
Respondent has offered no evidence that since the acquisition of the Domain Name it has used the GPI mark to market its products or services to consumers. Respondent appears to have stopped using the GPI trademark in commerce altogether (limited internal reference to the GPI mark does not establish continued use in commerce). Respondent no longer holds any trademark rights in the GPI mark.
Respondent argues that Complainant is using the UDRP process in bad faith to try to hijack a domain that has been legitimately used in good faith for decades. However, an Internet search of the GPI acronym does not yield any search results related to Respondent or its affiliates. Nor does the contact information for Respondent in the WHOIS record for the Domain Name make any reference to GPI. Even if Complainant had been aware of Respondent’s use of the subdomain openwebs.gpi.com, which it was not, when accessing this subdomain there is no use of the GPI mark or any reference to GPI, General Parts, Inc. or General Parts International, Inc. Only the Advance Auto Parts and CarQuest logos and names appear on the page with no publicly visible use of the Domain Name and no apparent use in commerce of the GPI mark by Respondent or General Parts International, Advance Auto or CARQUEST.
Respondent also fails to mention that during their communications with Complainant, the parties agreed to stay this proceeding to try and resolve the matter. Complainant offered to purchase the Domain Name in addition to offering to allow Respondent to continue using the subdomain openwebs.gpi.com for a period of time. Instead of responding or staying this proceeding, Respondent filed the instant Response accusing Complainant of reverse domain name hijacking.
D. Respondent additional Response
General Parts, Inc. operated as CARQUEST in 2010. There was no transfer to a new and unaffiliated registrant then, and Advance Auto Parts, Inc. did not acquire the General Parts companies until 2014.
Moreover, Advance Auto Parts, Inc. ultimately acquired the stock of General Parts International, Inc., the parent company of General Parts, Inc. The assets of those companies were not assigned—Advance Auto Parts, Inc. became the shareholder and ultimate owner of those assets.
Respondent’s field of business has remained consistent for decades, and the nature of the business conducted through the Domain Name has remained consistent from 2010 (well before the stock acquisition by Advance Auto Parts, Inc.) until the present. There also has been no break in the chain of possession of the Domain Name. To maintain continuous possession and use of a domain name, a registrant must periodically renew the domain name registration. Mere renewal of a domain name registration by the same registrant is insufficient to support a finding of registration in bad faith.
Similarly, there has been no break in Respondent’s use of the term GPI. General Parts International, Inc. and General Parts, Inc. continue to exist and to be referred to as GPI. The U.S. trademark legislation confers trademark rights by use of a trademark, not registration. The GPI acronym and name have continued to be used since at least 1962—and there is no evidence that such use was stopped.
Complainant also incorrectly infers there is an irregularity in the USPTO record for the GPI registration previously owned by General Parts, Inc. Respondent’s first specimen evidencing use of the GPI name and mark submitted to the USPTO is stamped June 26, 1973. At that time, the USPTO did not maintain an internet-accessible database. The USPTO has since been adding file histories to the electronic records of older registrations. Here, the USPTO just added the original application file history and specimen to its publicly available database in 2011—it is not evidence that General Parts, Inc. filed a 1973 specimen of use in 2011 or that GPI was not being used then.
Additionally, contrary to Complainant’s entirely unsupported claims, not only is there zero evidence that the General Parts companies or Advance Auto Parts, Inc. had any actual knowledge of Complainant’s mark—but constructive knowledge is irrelevant here where (a) that mark is a commonly used three-letter acronym and (b) Respondent already owned rights in or had an interest in GPI or was known by GPI when the domain name was registered and renewed.
Complainant is just one of many that use the acronym GPI as a mark or in its business; its use is no more important than another’s use of these letters and is certainly not superior to that of an earlier trademark owner and domain name owner using its marks and terms in connection with its business that has long used that acronym.
Lastly, Respondent is not using the Domain Name for a “limited internal purpose.” It uses the domain name—and has used it for over a decade—in connection with an important component of the General Parts, Inc. business—an e-commerce site that services over 1000 customers and creates millions of dollars in annual sales for Respondent.
Lack of use alone is not a sufficient basis to file a UDRP. Rather, Complainant must show (a) that Respondent has no legitimate interest in the domain name and (b) that Respondent registered and used the name in bad faith. Publicly available information, including that provided in connection with the Response, indicated neither was true, yet Complainant proceeded anyway. When directly provided with such information, it continued to pursue the Complaint.
Finally, the parties never agreed to a stay. Respondent raised the potential of a stay in the email submitted as Respondent’s Annex 1.34 and requested that Complainant dismiss the complaint. In response to that email, Complainant only offered a settlement proposal but did not mention a stay, much less propose one or agree to one.
Complainant provides zero precedent for a UDRP proceeding to be used in this scenario—i.e., to take a domain name from a registrant simply because Complainant believes they are somehow “more” entitled to it. This improper use of the UDRP will not only negatively impact Respondent by abruptly taking a domain name it is using (and has long used) in a legitimate manner but also one that, if allowed, would set a dangerous precedent.
FINDINGS
1) The facts set out below are taken from the Complaint.
Complainant Great Plains Ventures, Inc. is the parent company of Great Plains Industries, Inc. Great Plains was founded in 1968. Since its inception, Great Plains has expanded exponentially. The company now operates in a 178,000 sq. ft. facility with over 240 employees.
Great Plains is respected globally for its high-quality fuel transfer pumps, fuel meters, flowmeters, and industrial instrumentation for fluid transfer pump and liquid flowmeters. These products are offered under Great Plains’ GPI®, FLOMEC®, and GPRO® brands and serve industrial, commercial, and retail customers in various industries including, but not limited to, fuel, agriculture, chemicals, manufacturing, construction, mining, oil, and gas. Great Plains first began offering its products in commerce under the GPI brand at least as early as 1972.
On May 13, 1976, Great Plains filed an application with the United States Patent and Trademark Office for the stylized GPI trademark, and on June 5, 1985, filed an application for the GPI word mark. Great Plains has continued to file for and obtain registrations for its Marks both in the United States and internationally including in Canada, China and Japan. Great Plains markets and sells its GPI-branded products through its website, https://greatplainsindustries.com/, as well as through Amazon, Wal-Mart, and Great Plains’ Shopify website.
Great Plains has also devoted extensive resources to advertising and marketing expenditures of its GPI brand of products.
2) The facts set out below are taken from the Response
Respondent, Advance Auto Parts,Inc. is the parent of a large group of subsidiaries, which includes but is not limited to General Parts International, Inc. and its subsidiaries, including General Parts, Inc. Advance is one of the largest automotive aftermarket parts providers in North America, serving both the professional installer and do-it-yourself customer.
The domain name at issue (the “Domain Name”) has been registered by Advance and its predecessors for over twenty years—initially registered by General Parts, Inc. long before its 2014 acquisition by Advance.
General Parts, Inc. first commenced using the name and trademark GPI at least as early as March 16, 1972. It obtained a United States federal trademark registration for a GPI & Design mark (Reg. No. 994,166) on September 24, 1974 in connection with “distributorship services in the field of automotive parts” (“GPI Registration”). The specimen of use provided to the United States Patent and Trademark Office (USPTO) in support of General Parts, Inc.’s application was a brochure, which was received by the USPTO on June 26, 1973, and which shows use of the GPI & Design mark and refers to General Parts as GPI throughout. General Parts, Inc. renewed that GPI Registration multiple times, including the last renewal on October 5, 2004. The GPI Registration was due for renewal in 2014, however, no renewal application was filed then. Nevertheless, the name GPI has continued to be used.
Effective September 23, 2004, General Parts, Inc. became a subsidiary of The International Group, Inc. Effective November 22, 2006, the International Group, Inc. changed its name to General Parts International, Inc. Advance Auto Parts, Inc. acquired General Parts International, Inc., including its subsidiary General Parts, Inc., and all of their assets on January 2, 2014.
Regarding the use of the Disputed Domain Name, the earliest available WHOIS for the Domain Name is a 2001record, which lists General Parts, Inc (GPI) as the registrant and said record was create on February 23, 1999. At the time of that registration, GPI had long use the GPI name and owned a trademark registration for the GPI & Design mark.
General Parts, Inc, was the named registrant for the Domain Name until late July 2010, when the Carquest name was listed. Many of General Parts International, Inc.’s subsidiaries have operated and currently operate as CARQUEST. Advance acquired all of General Parts International, Inc.’s subsidiaries (including General Parts, Inc.) and all their assets, including the Domain Name in 2014.
The Domain Name has been used in various ways over the years that Advance, General Parts International, Inc., and their subsidiaries have owned it. It has hosted an e-commerce site for B2B customers through the subdomain . The Domain Name also supports internal operations through subdomains like and was previously used for GPI employee email addresses.
Respondent refuses claims of non-use by pointing out that the Wayback Machine’s inability to capture specific uses does not imply the Domain Name was inactive. Respondent suggests that a simple search would have revealed the respondent’s long-standing affiliation with GPI and the consistent use of the Domain Name.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The Complainant has established that it owns a registered trademark on the GPI sign. The Panel holds that the Disputed Domain Name is identical to the GPI trademark. It is well established that the specific Top-Level of the domain name (in this case “.com”) does not affect the domain name for the purpose of determining whether it is identical or confusingly similar – see Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. Accordingly, the Complainant has established the first element of paragraph 4(a) of the Policy.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds there is clear evidence that all of these circumstances apply in this case.
Indeed, Respondent uses the subdomain openwebs.gpi.com to administer an e-commerce website for its B2B customers. Respondent also uses the Disputed Domain Name through various other subdomains for external and internal uses. Panel therefore is satisfied that Respondent brought proof of a genuine business plan utilizing the Disputed Domain Name for its B2B website, openwebs.gpi.com.
Panel is of the opinion that even though the use is not evidenced in a public facing website, the Respondent is not using the Disputed Domain Name to infringe Complainant’s Rights. See, Groupement des cartes bancaires v. Domain Administrator, Coinbase, Inc., WIPO Case No. D2019-0263 (A disputed domain name does not have to be used for a public-facing service, such as a website, for that use to be legitimate).
In fact, Respondent has used the Disputed Domain in connection with its business, the automotive aftermarket, which is different from the Complainant’s, an industrial for fluid transfer pump and liquid flowmeters. More, Complainant put forward no-evidence demonstrating Respondent’s will to divert Complainant’s consumers or to tarnish Complainant’s trademarks. Nothing indicates that Respondent registered or used the Domain Name with Complainant in mind or to take unfair advantage of the reputation attached to its purported trademark. Respondent put forward evidence showing it registered the Domain Name and until 2016, each time it renewed the Domain Name, it owned a trademark registration for GPI.
After the cancellation of its trademark, Respondent continued to use the domain made up of an acronym directly tied to Respondent and its affiliates. Thus there is no need to establish trademark rights to find a legitimate interest by Respondent. See, Digitronics Inventioneering Corp. v. @Six.Net Registered, WIPO Case No. D2000-0008 (finding a legitimate interest by Respondent even where it had established no trademark rights).
As a matter of fact, Panel accepts that GPI is an acronym for General Parts, Inc, as well as General Parts International, Inc. Indeed, Panel finds that when the Domain Name was registered, General Parts, Inc., had long used GPI as a name and a trademark. General Parts is still referred as “GPI” on Advance’s website and in press releases, as well as Advance’s SEC filings, and in many third-party articles and other media. See Maharishi Foundation USA, Inc. v. Matthew Ward, WWTM, WIPO Case No. D2021-1333 (denying complaint and finding Respondent had a legitimate interest where domain name consisted of an acronym of Respondent’s social enterprise).
Thus, Panel agrees that the right to register such acronyms cannot be unlimited. Knowing of a complainant’s trademark, registering a domain name to copy the trademark or using it to trade off it or to target the trademark owner or act inappropriately towards it must put the registrant in a different position and put at risk its claim to have a right or legitimate interest in the domain name. But in the absence of such factors, and none are present in this case (as to which see further below) the registrant has as much right as anyone else to use expressions such as acronyms, generic, dictionary words or other domain names made up from a small number of letters.
In this regard, Panel underlines that Complainant put forward no-evidence showing the distinctiveness of its GPI trademark. Consequently, Respondent provided evidence of other hundreds of records in the registers of trademarks of the United States which include “GPI”. Many of these include “GPI” as part of some composite element such as “GPI DEFENSE”, “SWIFT GPI” or “GPI GESKUS PHOTOGRAPHY INC”. Nonetheless, some registrations consist of, or contain, “GPI” as a distinct element in itself including, for example, US trademark GPI registration no. 2891930.
Taking all these matters into account, the Panel finds the Complainant has not established that the Respondent has no rights or legitimate interests in the disputed domain name. The letters “GPI” are a natural derivation from the Respondent’s name and do not, in the circumstances outlined above, appear to be used in bad faith.
As the Complainant has not established the second requirement under the Policy, the Complaint must fail.
Registration and Use in Bad Faith
In light of the Panel’s finding under the second limb, the Panel need not consider whether or not the Disputed Domain Name was registered and used in bad faith. Nonetheless, the Panel considers the third limb merits analyses.
Complaint must show that “the registration was undertaken in bad faith and that Respondent is continuing to act in bad faith.” See, Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Kabushiki Kaisha Toshiba v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464.
Complainant alleges that the Respondent’s bad faith in registering the Domain Name should be determined as of 2010 because the transfer of a domain name to a third-party amounts to a new registration and that successive renewals of a domain name constitute re-registrations. Therefore, Respondent had actual and constructive notice of Complainant’s prior rights in the GPI mark at the time it registered the Domain Name.
Indeed, Panel reminds that the transfer of a domain name registration from a third party to the respondent is not a renewal and the date on which the current registrant acquired the domain name is the date a panel will consider in assessing bad faith. See, HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062 (“[T]he transfer of a domain name to a third party amounts to a new registration, requiring the issue of bad faith registration to be determined at the time the current registrant took possession of the domain name.”).
However, whilst it is well established that the transfer of a domain name to a third party does amount to a new registration, it is also generally accepted that such is not the case where there is evidence to establish an unbroken chain of underlying ownership by a single person, and any change in the WhoIs registrant data is not being made to conceal the underlying owner’s identity. See, Angelica Fuentes Téllez v. Domains by Proxy, LLC / Angela Brink, WIPO Case No. D2014-1860.
Here, the original registrant (General Parts, Inc.) operated under the Respondent in 2010 (CarQuest) and was therefore controlling it. There was no transfer to a new and unaffiliated registrant in 2010, and Advance Auto Parts, Inc. did not acquire the General Parts companies until 2014. Moreover, Advance Auto Parts, Inc. ultimately acquired the stock of General Parts International, Inc., the parent company of General Parts, Inc. The assets of those companies were not assigned—Advance Auto Parts, Inc. became the shareholder and ultimate owner of those assets. Therefore, Respondent’s field of business has remained consistent for decades, and the nature of the business conducted through the Domain Name has remained consistent from 2010 (well before the stock acquisition by Advance Auto Parts, Inc.) until the present.
Accordingly, Panel finds that there has been no break in the chain of possession of the Domain Name. In the WHOIS results for the domain name annexed as 1.15 to the Response, the domain name registrar lists the domain name as being created on February 23, 1999, and expiring on February 23, 2026. There is no indication that there was a “re-registration”. Rather, the renewal is treated as a ministerial function. See, Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), Case No. D2001-0782.
Furthermore, the Panel finds that the Complainant and the Respondent are in wholly different areas of activity – one is a fuel transfer pumps, fuel meters, flowmeters, and industrial instrumentation for fluid transfer pump and liquid flowmeters company, and the other an automotive aftermarket company. It seems fanciful to suggest the Respondent chose its name, or registered the Disputed Domain Name, because of any perceived connection with the Respondent, and the Complainant has not adduced any convincing evidence as to why the Respondent would have done so or what it might have gained from doing so. As stated above, Respondent was the owner of a US trademark GPI from 1974 until 2016. Up until today, Respondent continues using the acronym GPI to designate General Parts, Inc., and is still referred as “GPI” as shown on Advance’s website and in press releases, as well as Advance’s SEC filings, and in many third-party articles and other media.
Therefore, Panel agrees that Complainant put forth no evidence that Respondent had actual and constructive notice of Complainant’s prior rights in the GPI mark at the time it registered the Domain Name. Nor that Respondent registered the Domain Name to prevent Complainant from using GPI in a corresponding domain name.
More, Complainant put forth no evidence that Respondent registered the Domain Name primarily to disrupt the business of a competitor. Finally, Complainant put forth no evidence that Respondent registered the Domain Name to attract customers by creating a likelihood of confusion with Complainant’s trademark.
If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith. Accord, Telaxis Communications Corp. v. William E. Minkle, WIPO Case No. D2000-0005. Absent proof of bad faith registration, the Complainant has not satisfied the requirements of the UDRP. Weatherall Green & Smith v. Everymedia.com, WIPO Case No. D2000-1528. Panel finds that Complainant has not satisfied its burden of showing bad faith registration.
Lastly, in arguing that the Respondent registered the domain name in bad faith, Complainant asserts that Respondent’s failure to use the Disputed Domain Name in any way is evidence that Respondent uses the Disputed Domain Name in bad faith.
Besides, the Disputed Domain Name is being used in good faith. Indeed, Panel finds that, while Respondent is not using , Respondent uses and has long used the Domain Name in good faith via subdomains and in other manners. More, the Disputed Domain Name is a three-letter acronym that is commonly used as a trademark. There are many third parties globally who own trademark registrations for GPI in connection with a variety of goods and services.
For all the reasons above, the Panel finds that the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name.
REVERSE DOMAIN NAME HIJACKING
The Respondent contends that the Complaint has been brought in bad faith and, accordingly, the Complainant should be sanctioned by a finding of Reverse Domain Name Hijacking.
Paragraph 15(e) of the Rules provides, in part:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Paragraph 1 of the Rules defines “Reverse Domain Name Hijacking” to be “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
The fact that the Complaint has failed is not sufficient in itself to support a finding of reverse domain name hijacking. See, Groupement des cartes bancaires v. Domain Administrator, Coinbase, Inc., WIPO Case No. D2019-0263
The letters “GPI” have an obvious derivation from the General Parts, Inc., name. However, Panel finds that it was not possible for the Complainant to ascertain if and how the Respondent was in fact using the disputed domain name in the absence of a public facing use such as publicly accessible website. The fact that the use was not open to public inspection is a factor which must be taken into account in weighing the appropriateness under the Policy of the Complainant’s decision to bring the Complaint.
Complainant owned incontestable Trademark registrations, Respondents had no registration at the time of filing the Complaint, and Respondent did not seem to be making any use of the GPI mark. Moreover, although the Panel understands that Respondents’ offer to try to settle this dispute was a good faith effort to avoid the expense and inconvenience of litigation, the Panel concludes that it did not bring the Complaint in bad faith.
DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be Denied.
Accordingly, it is Ordered that the domain name REMAIN WITH Respondent.
Nathalie Dreyfus, Panelist
Dated: February 14, 2024
